USPA vindicated in Polo Ralph Lauren infringement case
By DIANE HENSLEY
NEW YORK—The U.S. Polo Association expressed jubilance Thursday over the 2nd U.S. Circuit Court of Appeals decision Mar. 4 upholding that they did not infringe on the Ralph Lauren double horseman trademark. The association’s victory marks the end to a decades-long court turf battle over the entitlement to employ the representation of horses in corporate branding—the fashion house which has used the player logo for profit since 1972 or the 118-year old players association that sought to use the representations to promote the thousands-year-old sport.
“The Polo Association is very pleased by this result. They have been working for many years now to vindicate their right to promote the sport and raise money for the sport using the symbol of people playing the sport,” said U.S.P.A. lawyer Gerald Ferguson. “We are hopeful that with this decision, we are putting the dispute with Ralph Lauren behind us and we will be able to co-exist in the marketplace,” he said in a report filed by the New York Law Journal Wednesday.
Ferguson and George Stamboulidis of Cincinnati-based Baker Hostetler, intellectual property experts and counsel to major league baseball, represented the U.S.P.A. along with Michael S. Sommer of McDermott Will and Emery.
The fashion house, which has used the silhouette of a mounted polo player with the raised mallet alleged that the USPA infringed the Ralph Lauren polo player logo by using four logos in conjunction with its licensee Jordache Ltd. The disputed double horseman marks included a solid silhouette of two horsemen, the same silhouette with “USPA” lettering below it; an outline of the two horsemen; and the same outline with the letters “USPA” underneath.
In a 2005 jury trial, the jury found that the first logo, the solid double horsemen silhouette without lettering, infringed PRL U.SA Holdings, Inc. trademarks. The jury found no likelihood of confusion and thus no infringement on the three other marks.
PRL appealed the judgment on several grounds—that the district court erred by allowing the defendants to present evidence of settlement negotiations that had occurred between PRL and the U.S.P.A. Secondly, the PRL also argued the court erred by delivering jury instructions that the defendants, as past infringers, were required to maintain only a “safe distance” from PRL’s marks, according to court documents. PRL lawyers also argued that the court should not have excluded a “Ralph Rip-Off” document from consideration, which demonstrated intent of the U.S.P.A. to compete unfairly by using a confusing trademark. The document had been prepared by a Jordache advertising exec but its context was not clear. It read:
“Everyone knows we’re ripping off Ralph. Including us. It is the mission of our advertising to deny it by appearing to be true to the sport. After all, Ralph did rip-off the sport.”
District court judges rejected all contentions and affirmed the judgment.
The PRL and the U.S.P.A. have been embattled since the 1980s when the U.S.P.A. entered the marketplace. But it did not license rights to Jordache to produce its trademarked clothing until 1998. The PRL obtained a judgment in the U.S. District Court for the Southern District of New York in 1984 enjoining the U.S.P.A. from using certain marks that infringed those of PRL. The judgment, however, permitted the polo association to continue using “a mounted polo player or equestrian, or equine symbol” that is different from that of Ralph Lauren’s, according to court documents.
Both sides subsequently entered settlement discussions. At trial, the U.S.P.A presented evidence and argued that the discussions resulted in an agreement regarding the disputed marks in 1996—a pact that would assure PRL would not object to the polo association’s use of the double horsemen mark. Jordache had invested some $41 million on the clothing line bearing the marks. The PRL’s former counsel testified, denying the pact occurred.
In Mar. 2000, the PRL filed a trademark infringement case against the U.S.P.A., Jordache and others and the litigants settled several of the disputes before trial in Sept. 2003. But that settlement excluded the infringement allegations for the four double horsemen marks. Parties agreed to resolve the claims in a jury trial, court documents showed.
The two-week trial in Oct. 2005 ended with special verdicts following a dispute over admission of evidence of the settlement pact. The jury found that the U.S.P.A.’s solid double horsemen mark infringed PRL’s registered trademarks, but that the other three; the solid double horsemen with U.S.P.A. subscript; the outline double horsemen; and the outline double horsemen with the subscript did not. The judgment was entered and the appeal ensued.
The decision favoring the U.S.P.A. was handed down by Judges Pierre Leval, Sonia Sotomayor and Barrington D. Parker Jr. Leval wrote for the court.